Ex Parte Sinnott

Patent Trial and Appeal Board

Jul 5, 2018

11586841 (P.T.A.B. Jul. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111586,841 10/26/2006
34725 7590 07/05/2018
CHALKER FLORES, LLP
14951 North Dallas Parkway, Suite 400
DALLAS, TX 75254
FIRST NAMED INVENTOR
Robert A. Sinnott
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
MANN:l008 1476
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
MAILDATE DELIVERY MODE
07/05/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ROBERT A. SINNOTT 1
Appeal2017-008995
Application 11/586,841
Technology Center 1700
Before BEYERL YA. FRANKLIN, RAEL YNN P. GUEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 5, 7-12, 14, 17-24 and 26-44. See Examiner's
Final Office Action, dated July 13, 2016 ("Final Act."); Examiner's Answer,
dated April 4, 2017 ("Ans."). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the rejection with respect to claims 12, 14, 17-24, and
26-44, and we AFFIRM the rejection with respect to claims 1, 5, and 7-11,
but do so under a new rational that constitutes a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. §41.50(b).
1 Appellant identifies Mannatech, Inc. as the real party in interest.
Appellant's Appeal Brief ("App. Br. 2").
Appeal2017-008995
Application 11/586,841
Appellant's invention is related to a dietary supplement for human and
animal consumption which is a combination of natural vitamin sources,
plant-derived mineral sources, and plant-based compositions with
standardized phytochemicals. Specification ("Spec.") i-f 0009. According to
the Specification, the invention is designed to maximize and/ or optimize the
delivery of specific nutrients. Id. i-f 0009. The Specification specifically
identifies plant-derived minerals from the seedlings of Brassica napus,
Brassica rapa, Brassica juncea, Medicago sativa, and Oryzae sativa seeds.
Id. i-fi-10010, 0014, 0072, 0075---0078. The Specification also identifies that
at least using edible plant tissue biomass, such as seedlings from the
Brassica juncea (Indian mustard) plant, in a food supplement was known in
the art at the time of the invention. Id. i-fi-10052---0053. In addition, the
Specification identifies known interactions between phytochemicals and
certain vitamin and mineral nutrients (id. i-fi-1 0054---0060, 0062---0068), and
indicates that the invention is designed to "optimally control these
interactions ... by choosing proper combinations of interacting ingredients"
and standardizing the agents "to ensure that the predicted and desired
interactions will occur on a reproducible basis." Id. i-f 0056.
Independent claim 1 is exemplary of the subject matter on appeal and
reproduced below:
1. A dietary supplement formulation comprising:
three plant-derived minerals within a plant tissue biomass
at between 0.03 and 3 .5 milligrams comprising zinc, boron, and
strontium from a seedling stage of a plant, wherein the plant is
selected from the group consisting of Brassica napus, Brassica
rapa, Brassica juncea, Medicago sativa, and Oryzae sativa,
wherein the three plant-derived minerals are components of an
extended release mineral supplement which 85% of the three
plant-derived minerals are released between 1 to 8 hours;
2
Appeal2017-008995
Application 11/586,841
one or more additional plant-derived minerals within a
plant tissue biomass selected from a group consisting of
magnesium, iron, selenium, chromium, vanadium, copper,
manganese, molybdenum, and iodine, wherein the one or more
additional plant-derived minerals are obtained from a seedling
stage of the plant, wherein the plant is selected from the group
consisting of Brassica napus, Brassica rap a, Brassica juncea,
Medicago sativa, and Oryzae sativa, wherein the one or more
plant-derived minerals are components of the extended release
mineral supplement in which 85% of the one or more plant-
derived minerals are released between 1 to 8 hours;
a source of calcium wherein a weight of the calcium is
between 0.03 to 30 milligrams; one or more plant-derived
vitamins or provitamins wherein a weight of each of the one
or more plant-derived vitamins or provitamins is between 0.038
to 4 mg and each of the one or more plant-derived vitamins or
provitamins is selected from the group consisting of vitamin
A, beta-carotene alone, carotenoids, lycopene, lutein,
zeaxanthin, cryptoxanthin, thiamine (vitamin B 1 ), riboflavin
(vitamin B2), niacin (vitamin B3), pantothenic acid (vitamin B5),
pyridoxine (vitamin Bl), folate (vitamin B9), cyanocobalamin
(vitamin B 12), vitamin C-complex, vitamin D, vitamin E,
tocopherols, tocotrieneols, and combinations thereof, to provide
a standardized amount of plant-derived vitamins or provitamins;
and
a plant-derived polysaccharide selected from a group
consisting of a plant polysaccharide, an algal polysaccharide, a
fungal polysaccharide, a bacterial polysaccharide, a plant gum,
aloe polysaccharide, and combinations thereof.
App. Br. 47, Claim App'x.
The Examiner applies the following prior art references2 :
Alderman
Howard
us 4, 734,285
us 4,915,962
Mar. 29, 1988
Apr. 10, 1990
2 Patent Owner does not assert that these references are not prior art under
35 U.S.C. § 102. See generally App. Br.
3
Appeal2017-008995
Application 11/586,841
Moshyedi us 4,770,215 June 23, 1998
Ensley et al US 6,270,809 B 1 Aug. 7, 2001
Fleischner US 6,291,533 Bl Sept. 18, 2001
Kosbab US 2001/0031744 Al Oct. 18, 2001
Bibennan US 2002/0019421 Al Feb. 14,2002
Slaga et al US 6,451,341 Bl Sept. 17, 2002
Harris US 2004/0115309 Al June 1 7, 2004
Perkes US 6,818,233 B2 Nov. 16, 2004
Christgau3 WO 2006/089546 Al Aug. 31, 2006
Elmer G. Henrich, A Message from the President, U.S. Naturals
November 2005 Newsletter (November 2005) (hereinafter "Henrich").
Technical Information for "Optimin Ionic Minerals", Organic
Pharmacy (2005), accessed February 7, 2012 at http://www.organic-
12harmacy.com/SunnlementFacts-Ogtmin%20Regu1ar.htm, (hereinafter
"OP").
Product information for "Super Spectrum Regular,"
SuperSpectrim.com (2007), accessed December 8, 2016 at
https://web.archive.org/web/org/web/20161104025143/http:/ lsuperspectrim.
com/s, (hereinafter "SS").
Product information for "Sizzling Minerals," "About the Wafers,"
accessed July 31, 2014 at http://www.usnaturals.eo.uk/minerals.htm,
(hereinafter "Sizzling Minerals").
3 The Examiner relies on US 2008/0221213 Al to Christgau, published
September 11, 2008, for the teachings of this international publication.
4
Appeal2017-008995
Application 11/586,841
The Examiner maintains the following rejection:
1. Claims 1, 5, and 9-11 under pre-AIA 35U.S.C§103(a) as being
unpatentable over Harris in view of Heinrich, Kosbab, OP, Slaga,
Christgau, SS, and Ensley as evidenced by Sizzling Minerals;
2. Claim 7 under pre-AIA 35 U.S.C 103(a) pre-AIA 35 U.S.C
§ 103(a) as being unpatentable over Harris in view of Heinrich,
Kosbab, OP, Slaga, Christgau, SS, and Ensley as evidenced by
Sizzling Minerals, as applied to claim 1, and further in view of
Biberman.
3. Claim 8 under pre-AIA 35 U.S.C § 103(a) as being unpatentable
over Harris in view of Heinrich, Kosbab, OP, Slaga, Christgau, SS,
and Ensley as evidenced by Sizzling Minerals, as applied to claim
1, and further in view of Alderman;
4. Claims 12, 14, 17-18, 21-24, and 28-30 under pre-AIA 35 U.S.C
§ 103(a) as being unpatentable over Harris in view of Heinrich,
Kosbab, OP, Slaga, Christgau, SS, and Ensley, Howard, Moshyedi,
Perkes, Fleischner as evidenced by Sizzling Minerals;
5. Claims 19 and 26 under pre-AIA 35 U.S.C § 103(a) as being
unpatentable over Harris in view of Heinrich, Kosbab, OP, Slaga,
Christgau, SS, and Ensley, Howard, Moshyedi, Perkes, Fleischner
as evidenced by Sizzling Minerals, as applied to claim 12, further
in view of Biberman;
6. Claims 20 and 27 under pre-AIA 35 U.S.C § 103(a) as being
unpatentable over Harris in view of Heinrich, Kosbab, OP, Slaga,
Christgau, SS, and Ensley, Howard, Moshyedi, Perkes, Fleischner
5
Appeal2017-008995
Application 11/586,841
as evidenced by Sizzling Minerals, as applied to claim 12, further
in view of Alderman;
7. Claims 31-32, and 35-37 under pre-AIA 35 U.S.C § 103(a) as
being unpatentable over Harris in view of Heinrich, Kosbab, OP,
Slaga, Christgau, SS, and Ensley, Howard, Moshyedi, as evidenced
by Sizzling Minerals;
8. Claim 33 under pre-AIA 35 U.S.C § 103(a) as being unpatentable
over Harris in view of Heinrich, Kosbab, OP, Slaga, Christgau, SS,
and Ensley, Howard, Moshyedi, as evidenced by Sizzling
Minerals, as applied to claim 31, and further in view of Biberman;
9. Claim 34 under pre-AIA 35 U.S.C § 103(a) as being unpatentable
over Harris in view of Heinrich, Kosbab, OP, Slaga, Christgau, SS,
and Ensley, Howard, Moshyedi, as evidenced by Sizzling
Minerals, as applied to claim 31, further in view of Alderman;
IO.Claims 38-39 and 42--44 underpre-AIA 35 U.S.C § 103(a) as
being unpatentable over Harris in view of Heinrich, Kosbab, OP,
Slaga, Christgau, SS, and Ensley, Howard, Moshyedi, Perkes, and
Fleischner, as evidenced by Sizzling Minerals;
11.Claim 40 under pre-AIA 35 U.S.C § 103(a) as being unpatentable
over Harris in view of Heinrich, Kosbab, OP, Slaga, Christgau, SS,
and Ensley, Howard, Moshyedi, Perkes, and Fleischner, as
evidenced by Sizzling Minerals, as applied to claim 38, further in
view of Biberman;
12.Claim 41 under pre-AIA 35 U.S.C § 103(a) as being unpatentable
over Harris in view of Heinrich, Kosbab, OP, Slaga, Christgau, SS,
and Ensley, Howard, Moshyedi, Perkes, and Fleischner, as
6
Appeal2017-008995
Application 11/586,841
evidenced by Sizzling Minerals, as applied to claim 38, further in
view of Alderman.
II. CLAIM INTERPRET A TI ON
"[T]he first inquiry must be into exactly what the claims define." In re
Wilder, 429 F.2d 447, 450 (CCPA 1970). During examination, "claims ...
are to be given their broadest reasonable interpretation consistent with the
specification, and ... claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art."
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
Claim 1 (and the claims that depend therefrom)
Claim 1 recites, inter alia, "three plant-derived minerals within a plant
tissue biomass" and specifically identifies the minerals as "zinc, boron and
strontium." Claim 1 further recites "one or more additional plant-derived
minerals within a plant tissue biomass" and lists a variety of minerals that
the "additional" mineral could be.
The Examiner determines that
The compos1t10n comprises certain amounts of
vitamins/minerals for nutritional supplementation, therefore the
matter of the source of the vitamins/minerals does not appear to
make a patentable distinction over a composition with the same
claimed vitamins and minerals of another source.
Ans. 13. With respect to the vitamin or provitamin and polysaccharide
components, we agree with the Examiner. With respect to the mineral
components, however, we disagree with the Examiner.
7
Appeal2017-008995
Application 11/586,841
With respect to the mineral components within a plant tissue biomass, we
understand that, at a minimum, at least zinc, boron, strontium, and one other
mineral from the group must be present in the dietary supplement "within a
plant tissue biomass." The limitation of the plant tissue biomass is
considered to be a structural limitation of the claim. In other words, the
claim is not met by forms of zinc, boron, strontium and one other mineral
that are isolated from a plant tissue biomass, even if the mineral is plant-
derived.
Claim 1 further recites that the mineral is "from a seedling stage of a
plant" that is "from the group consisting of Brassica napus, Brassica rapa,
Brassica juncea, Medicago sativa, and Oryzae sativa. Because claim 1
expressly includes the presence of plant tissue biomass, we understand this
limitation to further structurally limit the plant tissue biomass comprising the
recited minerals to biomass from a seedling of these sources.
With regards to the vitamin or provitamin and polysaccharide
components, we determine that the phrase "plant-derived," is a process
limitation in a composition claim. The Specification provides no evidence
of a structural distinction between vitamins and polysaccharides isolated
from "plant-derived" sources from those that are synthesized or are available
from other sources. Accordingly, the limitation "plant-derived" only carries
patentable weight to the extent a structural difference can be established
based on the process in which the vitamin or polysaccharide is produced. In
re Thorpe, 777 F.2d 695, 698 ("[E]ven though product-by-process claims are
limited by and defined by the process, determination of patentability is based
on the product itself The patentability of a product does not depend on its
rnethod of production. If the product in the product-by-process clairn is the
8
Appeal2017-008995
Application 11/586,841
same as or obvious :from a product of the prior art, the claim is unpatentabk
even though the prior product \Vas made by a different process.'}
Claims 12, 24, 31, and 38 {and the claims that depend therej1Dm)
Representative claim 12 is reproduced be1ow:
12. A dietary supplernent formulation to support bone
health comprising:
in a single dose ten plant-derived minerals comprising iron,
selenium, chromhnn, vanadium, copper, manganese,
molybdenum, iodine, boron, and zinc, wherein a weight of each
is between 0.03 and 3.5 milligrams and the plant-derived
minerals are obtained from the seedling stage of a plant, wherein
the plant is selected from a group consisting of Brassica napus,
Brassica rapa, Brassica juncea, lv1edicago sativa, and Orycae
sativa, wherein the plant-derived iron, se1enium, chromium,
vanadium, copper, manganese, molybdenum, iodine, boron, and
zinc are components of an extended release mineral supplement
in which 85%:i of the plant-derived iron, seknium, chromium,
vanadium, copper, rnanganese, molybdenum, iodine, boron, and
zinc are released between l to 8 hours;
a source of calcium, wherein the weight of the calcium is
between OJB to 30 minigrams;
one or more plant-derived vitamins wherein a weight of each
of the one or more plant-derived vitamins is between 0.038 to 4
mg per 125 milligrams of tota1 weight and each of the one or
more plant-derived vitamins is selected from a group consisting
of vitamin A, beta-carotene, carotenoids, 1ycopene, hltein,
zeaxanthin, cryptoxanthin, thiarnine (vitamin B 1 ), riboflavin
(vitamin B2), niacin (vitamin B3), pantothenic acid (vitamin
BS), pyridoxine (vitamin B l ), fr)late (vitamin B9),
cyanocobalamin (vitamin B 12), vitamin C-compkx, vitamin D,
vitarnin E, tocopherols, and tocotrieneols to provide a
standardized amount of plant-derived vitamins;
one or more yeast nutrients selected from a group comprising
thiamine, riboflavin, niacin, vitamin B6, pantothenic acid, folic
acid, and biotin, and
9
Appeal2017-008995
Application 11/586,841
a powder of a1oe vera ge1.
/\pp. Br. 48----49, Claim A.pp~x.
The minerals recited in independent claims 12, 24, 31, and 38 are recited
as "the plant-derived minerals ... obtained from a seedling stage of a plant,
wherein the plant is selected from the group consisting of Brassica napus,
Brassica rapa, Brassicajuncea, lvfedicago saliva, and ()Jyzae sativa."
These c1aims do not expressly require that the minerals are "within a plant
tissue biomass,~' as recited in claim 1, and thus are on1y directed to the
minerals themselves. 'Therefore, the requirement that the minerals be '"p1ant-
derived" and from seedlings of particular plants are product-by-process
limitations that do not structurallv define the minerals. Absent evidence of a
.;
structural distinction between minerals isolated from "plant-derived" sources
from those that are synthesized or are available from other sources, we
consider that the claimed minerals are not distinguished from minerals from
other sources. FurtheL the vitamins or provitamins and polysaccharides that
are defined only as "plant-derived" or from specific sources likewise are
product-by-process limitations that do not stn1cturally distinguish the
claimed vitamins or provitamins and polysaccharides from vitamins or
provitamins and polysaccharides frorn other sources.
\Ve agree with the Examiner (see Ans. 22) that the preamble limitation
'"to support bone hea1th" is not a structural !imitation because it only
describes an intended use for the food supplement.
Fmiher, \Ve agree \:vith the Examiner (see id.) that the phrase "to provide
a standardized amount of plant-derived vitamins," does not further limit the
weight range of a vitamin recited in the claims. Since the claim requires a
specific amount of vitamin, the arnount is standardized. 1\iforeover, the term
10
Appeal2017-008995
Application 11/586,841
"standardized~' is used throughout the Specification but is not defined
therein. In the context used, it appears to mean no more than that the
amounts of vitamins and minerals present are known.
Thus, we consider c1aim 12 to recite a dietary supplement formulation
compnsmg:
(a) an extended release mineral supplement comprising 0.03 to 3.5 rng
each of iron, selenium, chromium) vanadium, coppeL manganese)
mo1ybdenum, iodine, boron) and zinc, in which 85 1~1;) of the minerals
are released between 1 and 8 hours;
(b) 0.03 to 30 mg of calcium;
(c) 0.038 to 4 mg per 125 mg per weight of the supplement of at least one
of vitamin A, beta-carotene, carotenoids, lycopene, lutein, zeaxanthin,
cryptoxanthin, thiamine (vitamin B 1 ), riboflavin (vitamin B2), niacin
(vitamin B3 )) pantothenic acid (vitamin BS), pyridoxine (vitamin B 1 ))
folate (vitamin B9\ cyanocobalamin (vitamin B 12), vitamin C-
complex, vitamin D, vitamin E, tocopherols, and tocotrieneols;
( d) one of thiamine, riboflavin, niacin, vitamin B6, pantothenic acid, folic
acid, and biotin; and
( e) aloe vera gel powder.
II. DISCUSSION
Claims 1, 5, and 7-11 stand rejected under Harris in view of Heinrich,
Kosbab, OP, Slaga, Christgau, SS, and Ensley as evidenced by Sizzling
Minerals, alone or in view of additional prior art.
With respect to the first rejection, Appellant presents argument with
respect to claims 1, 5, and 9-11 as a group for which we select claim 1 as a
11
Appeal2017-008995
Application 11/586,841
representative claim. Although provided under separate heading, Appellant
presents no further rationale with respect to separately rejected claims 7 and
8. App. Br. 32-34. Accordingly, claims 1, 5, and 7-11 stand or fall with
claim 1.
At the outset, the Examiner finds that Harris teaches a dietary
supplement including zinc, boron and strontium (Final Act. 3; Ans. 3) and
that these minerals are found in natural plant sources including "Chinese
cabbage (0099 - i.e. Brassica rapa), luceme (0093 - i.e. Medicago sativa);
and canola (0101 - i.e. Brassica napus)."
Appellant contends that, contrary to the Examiner's findings, Harris
teaches a food supplement containing at least trace amounts of zinc, but does
not teach that the zinc is provided a part of the plant tissue biomass
described therein, and nowhere mentions boron or strontium as part of a
plant tissue biomass. App. Br. 23, 31 ("[Harris] is silent as to any minerals
with the exception of 'calcium, potassium, and selenium' at [0069].").
We agree with the Appellant that the Examiner erred in finding that
Harris teaches or suggests zinc, boron and strontium provided in a plant
tissue biomass.
The Examiner further relies on the teachings of Ensley as teaching a
food supplement comprising a plant tissue biomass, but makes no findings
as to what specific minerals are provided in the plant tissue biomass taught
therein. Final Act. 11; Ans. 11.
Accordingly, the Examiner has not established that the prior art
teaches or suggests a food supplement comprising zinc, boron, strontium and
one of the other listed mineral "within a plant tissue biomass" as recited
claim 1.
12
Appeal2017-008995
Application 11/586,841
Because the Examiner relies on these teachings with respect to claim
1 and the claims that depend therefrom, we do not sustain the Examiner's
rejection of claim 1 based on the reasoning put forth by the Examiner.
Nonetheless, the rejection is still sound based on additional findings
and an alternative rationale which we set forth in detail below as a new
ground of rejection.
Claims 12, 24, 31, and 38 (and the claims that depend then:j}·om)
The Examiner rejects claims 12, 24, 31, and 38 and the claims that
depend therefrom in view of the same prior art applied to claim 1 but further
in view of additional prior art. Appellant presents substantially the same
arguments with respect to these claims as they do with the rejection based on
claim 1. In order to address the Examiner's rejection with respect to these
claims, we select claim 12 as a representative claim on appeal. We apply the
claim interpretation discussed above to our analysis of claim 12.
Because these claims do not require that the various minerals must be
present in a plant tissue biomass, the Examiner's findings that fail with
respect to claim 1 do not fail with respect to these broader claims because
these claims merely require the presence of minerals, even in a form isolated
from their sources. The prior art expressly teaches various dietary
supplements comprising the recited vitamins and minerals and we agree with
the Examiner that, in light of the prior art as a whole, the combination of
known dietary supplement components would have been obvious to one of
ordinary skill in the art. Rather, as noted by the Examiner, Appellant attacks
each of the references and does not address what the skilled artisan would
13
Appeal2017-008995
Application 11/586,841
have understood based on the combined teachings of the references. See,
e.g., In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
For example, the "Sizzling Minerals" product, as described in
Henrich, and OP each teach mineral supplements comprising all ten of the
recited minerals and calcium.
Appellant contends that Heinrich/Sizzling Minerals is a sprinkling
powder to apply to food rather than a food supplement as claimed. App. Br.
26. Similarly, Appellant contends that Harris does not teach a "dietary
supplement" but rather teaches a "food supplement and methods for aiding
in the prevention or treatment of a respiratory disease or as an ergogenic
aid." App. Br. 22.
Appellant's arguments are not persuasive because Appellant has
provided no express definition of "dietary supplement" that distinguished it
from a "food supplement" or any other type of nutritional supplement.
Humans and most animals get all their nutrition from their diet, i.e., the food
they eat. Anything consumed in addition to the food would be a dietary or
food supplement. Indeed, whether the supplement is added in the form of a
"wafer" as taught by Sizzling Minerals, a power that is sprinkled onto food,
which is additionally taught by Heinrich, or "a powder, a pellet or a drink,"
as taught by Harris, each can be characterized as a dietary supplement.
Appellant contends that Heinrich does not teach the specifically
claimed plants, even though it does teach that the minerals are "plant-
derived." Appellant present the same arguments with respect to some or all
of the components taught by OP (App. Br. 29), Harris (App. Br. 22-23),
Kosbab (App. Br. (28-29), Slaga (App. Br. 29-30), Christgau and SS (App.
Br. 30).
14
Appeal2017-008995
Application 11/586,841
While these arguments may have been relevant to the Examiner's
rejection of claim 1, which specifically recites the presence of "plant tissue
biomass," they are not relevant to claim 12. As discussed above, claim 12
merely recites the presence of minerals. The term "plant derived" is
considered to be a product-by-process limitation because Appellant has not
explained how the minerals present are structurally distinguishable from
minerals that are isolated from alternative sources. As far as the claim is
concerned, iron is the element of iron no matter where it is derived from.
Accordingly, we are not persuaded of error in the Examiner's rejections
because some of the minerals and vitamins taught by the prior art are not
"plant-derived. "4
Appellant contends that Heinrich and Sizzling Minerals are unreliable
references because Heinrich states that "no chloride" is present, but Sizzling
Minerals shows it is present. App. Br. 26. We are not persuaded. The
chloride content, whether correct or not, is not relied upon as a basis for the
rejection since it is neither recited nor expressly excluded by the language of
the claim. Thus, even if there is an error in the content of this element, it
does not affect what one skilled in the art would have understood about the
ten listed minerals recited in the claims.
With respect to the amounts of the minerals in the dietary supplement,
the Examiner further finds that Harris, Howard, and Moshyedi teach dietary
4 Moreover, Sizzling Minerals further describes each of the 75 minerals
contained therein as "plant-derived." While we do not consider this
limitation of the claim to have patentable weight it is nonetheless a feature
that is clearly taught as conventional in the prior art. As further discussed in
detail below with respect to claim 1, Harris and Ensley, and other admitted
prior art, also clearly teach that it is known in the art to use tissue biomass
from the specifically recited plant seedlings in a dietary supplement.
15
Appeal2017-008995
Application 11/586,841
supplements that comprise the minerals present in amounts that at least
overlap the amounts recited in the claims. Ans. 17-19. The Examiner finds
that it would have been obvious to provide known minerals from known
dietary supplements in amounts as low as the ranges recited in the claims, as
such amounts are recognized as being useful in dietary supplements. Ans.
19.
Appellant has not disputed the Examiner's reasoning, and we find it
reasonable in light of the teachings of the prior art. Moreover, we agree with
the Examiner (see e.g. Ans. 10, 20) that discovering the optimum or
workable ranges for known components of dietary supplements involves
only routine skill in the art. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1368 (Fed. Cir. 2007) ("[D]iscovery of an optimum value of a variable in a
known process is usually obvious."); In re Aller, 220 F.2d 454, 456 (CCPA
1955) ("[I]t is not inventive to discover the optimum or workable ranges by
routine experimentation.").
With respect to the use of time release formulations, the Examiner
finds that Slaga, Christgau, and SS teach providing vitamins and minerals in
a timed release formulation as recited in the claims. Ans. 7-8. The
Examiner determines that it would have been obvious to provide known
mineral supplements in extended release formulations for the same reasons
as the mineral supplements in Slaga, Christgau and SS. We find the
Examiner's reasoning supported by the record because at least Slaga
describes an extended release formula "for the extended action of the
ingredients from a single dose ... eliminating the necessity for dosage
several times during the day" in addition to other benefits. Slaga, col. 24, 11.
1-14.
16
Appeal2017-008995
Application 11/586,841
Appellant contends that Slaga and SS are directed only to minerals in
salt form and each only teaches standard sustained release pharmaceutical
technology. App. Br. 30. However, the claim does not exclude using
standard sustained release pharmaceutical technology and the Examiner is
not relying on these sustained release teachings for the particular mineral
form being so released. Appellant has not shown error in the Examiner's
rationale that conventional sustained release technology can be used for
extended release of minerals known to be used in dietary supplements in a
sustained manner.
The Examiner primarily relies on Harris for teaching a dietary
supplement comprising minerals and at least one vitamin, e.g., vitamin C,
present in a weight percent that overlaps the weight percent recited in the
claims. Ans. 8, 20. The Examiner further notes that other prior art
supplements include both vitamins and minerals. See Ans. 5 (Kosbab). We
further note that Slaga, SS, Howard, Moshyedi, and Fleischner are directed
to supplements comprising both vitamins and minerals. The Examiner
concludes that it would have been obvious to include at least one vitamin
along with minerals in a dietary supplement. Appellant does not dispute the
Examiner's rationale, and we agree with the Examiner that the skilled artisan
would add vitamins to a dietary supplement comprising minerals for the
known benefits of vitamins in dietary supplements. We further agree with
the Examiner that discovering the optimum or workable ranges for known
components of dietary supplements involves only routine skill in the art.
See Pfizer, 480 F.3d at 1368; Aller, 220 F.2d at 456.
Appellant contends that Kosbab teaches bioflavonoids and
chondroitin sulfate and/or glucosamine as required components, and does
17
Appeal2017-008995
Application 11/586,841
not teach or suggest eliminating or replacing these components. App. Br. 29.
Appellant's argument is not persuasive because the claims do not expressly
or indirectly exclude these components from the dietary supplement, and the
transitional phrase "comprising" opens the claim to the presence of other
ingredients reasonable for nutritional compositions. Afars Inc. v. IL!. l!ein::
Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004).
The Examiner also finds that Fleischner teaches using plant nutrients
and aloe vera gel concentrate in a dietary compositions. Ans. 21. The
Examiner determines that it would have been obvious to provide these
known dietary supplement components as they are recognized as being
useful amounts in dietary supplements. Id. Appellants do not dispute the
Examiner's findings or rationale.
Accordingly, we find no error in the Examiner's rejection of claims
12, 14, 17-24 and 26-44 as being unpatentable over Harris in view of
Heinrich, Kosbab, OP, Slaga, Christgau, SS, and Ensley as evidenced by
Sizzling Minerals, alone or in view of additional prior art.
NEW GROUNDS OF REJECTION
We enter the following NEW GROUNDS OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
The Board affirms the rejections of claims 1, 5, and 7-11 under Harris
in view of Heinrich, Kosbab, OP, Slaga, Christgau, SS, Ensley, as evidenced
by Sizzling Minerals, alone or in view of additional prior art, based on an
alternative rationale as follows.
Ensley teaches a nutritional supplement that is made from seedlings of
edible plant tissue biomass (abstract). Ensley teaches the biomass to
18
Appeal2017-008995
Application 11/586,841
preferably be Indian mustard (Brassica Juncea) (col. 4, 11. 49--53, col. 13, 11.
11-25) and preferable contains:
one or more of the following metals in at least the specified
concentration on a dry weight basis: 1,400 mg/kg arsenic, 100
mg/kg boron, 20,000 mg/kg calcium, 1,600 mg/kg chromium,
800 mg/kg cobalt, 5,600 mg/kg copper, 100 mg/kg germanium,
200 mg/kg iron, 6,000 mg/kg magnesium, 7 ,500 mg/kg
manganese, 100 mg/kg molybdenum, 450 mg/kg nickel, 20,000
mg/kg potassium, 100 mg/kg selenium, 100 mg/kg silicon, 100
mg/kg vanadium, or 7 ,400 mg/kg zinc.
Ensley, col. 4, 11. 39--49. Ensley expressly teaches the biomass contains all
the minerals which are recited in the claim except the required strontium and
the optional iodine (col. 3, lines 37-67).
However, Applicant has admitted in the Specification, that 125 mg of
the particular plant seedling taught by Ensley (Brassica juncea, also known
as Indian mustard) contains the precise amounts of each of the minerals
recited in the claims, including strontium. Spec. i-fi-10072, 0075, and 0076.
Applicant has specifically pointed out in the Specification that the plant
tissue biomass of Ensley, and Brassica juncea generally, is suitable for use
in the present invention. Spec. i-fi-10052---0053.
Accordingly, we determine that Ensley teaches the same mineral
composition in a plant tissue biomass that is recited in the claims. Further,
we find that the amounts of each minerals are proportionately available in
the amounts recited in the claims, and thus provided in a standardized
amount per amount of seedling biomass provided, and the skilled artisan
would have been capable, through no more than routine experimentation, to
determine workable or optimal amounts of biomass to include in a dietary
supplement formulation.
19
Appeal2017-008995
Application 11/586,841
Ensley does not teach the addition of one or more of the claimed
vitamins or the addition of a polysaccharide. As our previous discussion of
the Examiner's rejection of claim 1 explains, the vitamins and
polysaccharides may be provided in an isolated form because claim 1 does
not requires that these components be provided in a plant tissue biomass.
We have also noted that several of the prior art references, namely
Harris, Kosbab, Slaga, SS, Howard, Moshyedi, and Fleischner, teach
combining vitamins or provitamins with minerals in a dietary supplement for
their known health benefits. For example, Harris teaches a food supplement
(Harris, abstract) that contains one or more antioxidant vitamins that
includes vitamin C, vitamin E, and beta-carotene (id. i-f 0030) in addition to
minerals (id. i-fi-10044---0045, 0058) wherein the vitamin C is at a
concentration of 3 mg. Id. i-f 0032. Harris teaches adding vitamin C because
it has an essential role in the maintenance of healthy teeth, gums and bones
as well as aiding in healing wounds, scar tissue and fractures and
strengthening blood vessels. Harris teaches vitamin C builds resistance to
infection and aids in the prevention and treatment of the common cold. Id. i-f
0031. Harris also teaches adding vitamin E because it protects cells against
free radical induced damage. Id. i-f 0034. Finally, Harris teaches adding
beta-carotene because it is beneficial against selected cancers, cardiovascular
diseases, cataracts, and age related macular degeneration. Id. i-f 0039. Harris
and Ensley are both directed to dietary (i.e., food) supplements and both
include teachings related to introducing at least some of these components
directly from tissue biomass of plants from the Brassica family. Id. i-fi-1
0068-0070. Harris also teaches adding the phytochemicals recited in claim
5, from soy sources for their known antioxidant, anti-carcinogenic,
20
Appeal2017-008995
Application 11/586,841
bactericidal, anti-viral, anti-inflammatory and anti-hypertensive activities.
Id. if 0048.
Harris also teaches the addition of starches to the food supplement as
a binder or filler while Christgau teaches the addition of cellulose-derived
mono-, di-, and oligo-polysaccharides to food supplements as a binder.
Harris if 0101; Christgau iii! 0061-0062. Both references teach the addition
of these components so their respective edible product can be formulated in
a particular dosage form. Harris if 0101 ; Christgau iii! 0060-0063. In light of
this disclosure, it would have been obvious to one skilled in the art at the
time of the invention to add the polysaccharide of Harris or Christgau to the
supplement of Ensley when providing the formula in a particular dosage
form as a binder or filler, thereby obtaining the present invention.
In light of the prior art teachings, it would have been obvious to one
skilled in the art at the time of the invention to add the vitamins and
phytochemicals of Harris, and the polysaccharides of Harris and Christgau
or the other dietary supplements of record to the mineral supplement of
Ensley for the known benefits of these components in dietary supplements,
thereby obtaining the present invention.
Ensley does not teach the time release of the contents of the food
supplement.
We agree with the Examiner's findings regarding the teachings of
Slaga, Christgau, and SS as showing that it was well known in the art at the
time of the invention to include a dietary supplement in a time release
formulation. Ans. 7-8. For example, Slaga teaches a sustained-release
dietary supplement that contains vitamins and minerals. Slaga, abstract.
Slaga further shows that at least 85% of the nutrients are release between 1
21
Appeal2017-008995
Application 11/586,841
and 7 hours. Id. figure 1. Slaga teaches using extended release because it
provides for the extended action of the ingredients from a single dose,
therefore, eliminating the necessity for dosage several times a day. Id. col.
24, 11. 1-14. Slaga also teaches that it provides therapeutic benefits such as a
slow and constant supply of antioxidants which will provide protection
against cancer and cardiovascular disease throughout the day. Id. In light of
the benefits noted above, it would have been obvious to one skilled in the art
at the time of the invention to use time release techniques known in the art to
delay release of the supplement of Ensley as so modified above, thereby
obtaining the present invention.
With respect to claims 7-11, we adopt the findings of the Examiner
and these reasons for concluding that these additional features are also
obvious of the prior art of record. See Ans. 14--16.
Appellant contends that Ensley teaches Brassica plants to be used
because they are good at accumulating metals but that the present invention
includes minerals that are not metals. App. Br. 31.
Appellant's argument is not persuasive because in addition to the
uptake of metals, Ensley expressly teaches that the Brassica plants include
all of the minerals recited in the claims except strontium, which is a metal.
Ensley col. 3, 11. 47-57. Moreover, despite this lack of teaching, Appellant
admits that the identical plants seedlings taught by Ensley, e.g., Brassica
juncea (Indian mustard) contain strontium in the recited amounts.
Appellant further asserts that "the ingredients do not act separately but
are chemically combined and do in fact co-act to provide new, unexpected
and useful functions." Reply Br. 7. Appellant cites to paragraphs 0051-
22
Appeal2017-008995
Application 11/586,841
0060 (see also i-fi-1 0062---0068) of the Specification which recite known
interactions between various components recited in the claims.
Appellant's argument is not persuasive that the invention is not
obvious over the prior art. Initially, the claims are not limited to the specific
known interactions recited in the claims. Thus, the claims are not
commensurate in scope with the allegedly known co-actions described
therein. Further, the Specification includes sources for each of the known
interactions. Thus, each of these interactions are expected and predictable,
and cannot be shown to be unexpected in light of the prior art recited
expressly in the Specification. Indeed, the Specification describes the
invention as merely recognizing these known interactions and making a
standard product "to ensure the predicted and desired interactions will occur
on a reproducible basis." Spec. i10056.
We find nothing inventive in using known dietary supplement
components, from known dietary supplement sources, and combining them
to take advantage of known interactions between these components or doing
so in a time-release formulations, as is also known for dietary supplements.
In other words, we agree with the Examiner that Appellant claims a formula
for making nutritional food product comprising commonly known
ingredients, such as vitamins, minerals and polysaccharides with no specific
showing that establishes a coaction or cooperative relationship between the
selected ingredients which produces a new, unexpected and useful function.
Ans. 14.
Therefore, we sustain the Examiner's rejections but designate the
rejections as new grounds in light of our additional findings and alternative
rationale.
23
Appeal2017-008995
Application 11/586,841
III. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the rejections maintained by the Examiner, but designate the
rejections of claims 1, 5, and 7-11 as new grounds.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). That section provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record ....
AFFIRMED; 37 C.F.R. § 41.50(b).
24